Disclaimer

"Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.

July 16, 2013

New Patent Litigation Bill Introduced in House

Last week, Rep. Hakeem
Jeffries (D-NY) introduced the "Patent Litigation and Innovation Act of
2013" (H.R. 2639)
in the House. The bill, which would add procedural
requirements for patent infringement suits, is related to the "Patent
Abuse Reduction Act of 2013" (S. 1013), which was introduced in the Senate
in May (see "Congress Continues Efforts to
"Reform" U.S. Patent Law").

Like
S. 1013, H.R. 2639 would require a party alleging infringement to include in
its complaint, counterclaim, or cross-claim an identification of each patent,
and each claim of each patent, allegedly infringed, as well as a specific
identification of each accused instrumentality alleged to infringe the claim,
the party alleging infringement would also be required to provide "a
description of the principal business of the party alleging infringement"
and to identify co-owners, assignees, and exclusive licensees of the asserted
patent. Unlike the Senate version of the
bill, the House version would not require a party alleging infringement to
include a list of other complaints (of which the party alleging infringement
has knowledge) asserting the same patents; whether the asserted patents are subject
to any licensing term or pricing commitments through any agency, organization,
standard-setting body, or other entity or community; or the identity of any
person having a direct financial interest in the outcome of the action.

In
addition, while S. 1013 would limit discovery prior to claim construction
"to information necessary for the court to determine the meaning of the
terms used in the patent claim, including any interpretation of those terms used
to support the claim of infringement," H.R. 2639 would permit a court to
stay discovery "if the court determines that a ruling relating to the
construction of terms used in a patent claim asserted in the complaint in the
action is required." The House bill
also includes provisions for a stay of action against secondary parties, which
would allow a court to "grant a motion to stay all or part of the action
as to a secondary party with respect to infringement related to a primary party
in the same or another action concerning the same apparatus, product, feature,
device, method, system, process, function, act, service, or other
instrumentality, in whole or in relevant part, of the disputed patent of the
primary party" provided that certain conditions are met.

In
addition, the House bill provides provisions for sanctions for abusive
litigation. In particular, the
legislation would require a court, upon final adjudication of "any civil
action arising under any Act of Congress relating to patents," to "include
in the record specific findings regarding compliance by each party and each
attorney representing any party with each requirement of Rule 11(b) of the
Federal Rules of Civil Procedure as to any complaint, responsive pleading, or
dispositive motion."

A
statement released on Rep. Jeffries' website
noted that the new legislation "represents a bipartisan effort to promote
American innovation and job creation in the technology ecosystem by addressing
the growing problem of abusive patent litigation." Rep. Jeffries (above left) suggested that the legislation
was needed because of "[t]he explosion of patent troll activity [that] diverts
resources away from research and development, hinders innovation and stifles
entrepreneurship." Co-sponsor Rep. Blake Farenthold
(R-TX) stated that "Americans need to know they are safe from abusive
litigation when they buy a product off the shelf and use it for its intended
purpose," adding that "[t]he solutions proposed in [H.R. 2639] will
deter patent trolls without impeding the rights of responsible intellectual
property holders."

After being introduced, the
bill was referred to the House Committee on the Judiciary.

Comments

The US is moving to the UK system, which is eminently more sensible. Showing a product at a trade fair before it is patented puts it in the public domain. Inventors should still not rush to patent, better to hone the invention before patenting. Applying for a US provisional patent is also not the smart thing to do, better to apply for a British patent first then move on to a non-provisional US utility patent a year later. Amazon have a good ebook on DIY patenting online internationally.